DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restriction
Applicant’s 9/28/26 election without traverse of Group II (claims 11-19) is acknowledged. Claims 1-10 are withdrawn from further consideration per 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim.
Drawings
The 5/6/24 drawings are provisionally accepted. Due to their complexity and/or numerosity, applicant’s assistance is requested to ensure that all component labels therein are correctly identified in the specification and vice versa. 37 CFR 1.3 (courtesy required).
Double Patenting
The nonstatutory double patenting (“NSDP”) rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A NSDP rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046 (Fed. Cir. 1993); In re Longi, 759 F.2d 887 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937 (CCPA 1982); In re Vogel, 422 F.2d 438 (CCPA 1970); In re Thorington, 418 F.2d 528 (CCPA 1969).
A timely filed terminal disclaimer (“TD”) in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional NSDP rejection provided that the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A TD must be signed in compliance with 37 CFR 1.321(b). The filing of a TD by itself is not a complete reply to a NSDP rejection. A complete reply requires that the TD be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains TD forms that may be used. See www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer (“eTD”) may be filled out completely online using web-screens. An eTD that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTDs, see www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Instant claims 11-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the 5/6/24 claim set of copending Appl’n 18/655,762 (published 11/6/25 as US 2025/0339827, herein “’827”). Although the claims at issue are not identical, they are not patentably distinct from each other because they are coextensive in scope and do not manifest any non-obvious differences, as detailed below. These are provisional nonstatutory double patenting rejections as the patentably indistinct claims are not yet patented.
Regarding instant claim 11, ‘827 so claims, adding a detail that the superheating section is heated with an electrical system therein. See ‘827 at clm. 11. However, this is not a patentable difference, since the omission of an element or limitation with a corresponding loss of function has been held to be an obvious variation. See In re Kuhle, 188 USPQ 7, 9 (CCPA 1975); Ex parte Wu, 10 USPQ 2031 (BPAI 1989); MPEP 2144.04 II. A.
Regarding instant claims 12-14 and 16-19, ‘827 so claims. See ‘827 at, respectively, clms. 12-15 and 17-19.
Regarding instant claim 15, ‘827 so claims, as detailed above vis-à-vis instant claim 11. See id. at clm. 11.
Instant claims 11-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the 5/6/24 claim set of copending Appl’n 18/655,870 (published 11/6/25 as US 2025/0339829, herein “’829”). Although the claims at issue are not identical, they are not patentably distinct from each other because they are coextensive in scope and do not manifest any non-obvious differences, as detailed below. These are provisional nonstatutory double patenting rejections as the patentably indistinct claims are not yet patented.
Regarding instant claim 11, ‘829 so claims, save for the limitation that at least a portion of a gaseous product is received from a reactor in the medium temperature heating section. See ‘829 at clm. 11. This difference is nevertheless not considered a patentable distinction as ‘829’s gas/(catalytic) particles within its medium temperature heating section are implicitly received from somewhere (MPEP 2112 & 2144.01), and instant claim 11’s “from a reactor” gives no structural or method-based details as to the “reactor”, i.e. the source of ‘829’s gas/(catalytic) particles can reasonably be considered a reactor.1 As to ‘829’s claim 11’s added detail that the superheating section is heated with an electrical system therein, this is not a patentable difference, since the omission of an element or limitation with a corresponding loss of function has been held to be an obvious variation. In re Kuhle; Ex parte Wu; MPEP 2144.04 II. A.
Regarding instant claims 12-14 and 16-19, ‘829 so claims. See ‘829 at, respectively, clms. 12-15 and 17-19.
Regarding instant claim 15, ‘829 so claims, as detailed above vis-à-vis instant claim 11. See id. at clm. 11.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 11-19 are rejected under 35 U.S.C. 112(b)/2nd par. as indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 11 doubly-recites “a reactor”, in the 1st “receiving” step and the 3rd “heating” step. MPEP 2173.05(o), citing Ex parte Kristensen, 10 USPQ2d 1701 (BPAI 1989). The foregoing renders it unclear if each instance of “a reactor” refers either to the same or different reactor, as well as to which “a reactor” the claim’s subsequent “the reactor” recitations refer, creating confusion as to the claimed scope and how to avoid infringement thereof (MPEP 2173.02), thus rendering claim 11 rejected as indefinite under 35 U.S.C. 112(b)/2nd par. Applicant is hereby advised that, as independent claim 11 is rejected for deficiencies under 35 USC 112(b)/2nd par., all claims depending therefrom also contain such deficiencies and are likewise rejected (unless the deficiencies are resolved by the dependent claim’s own limitations) - cure thereof is required for any and all claims affected even if any such claim were otherwise found allowable. See, e.g., In re Jolly, 172 F.2d 566, 567 (CCPA 1949) (holding that dependent claims of indefinite claims are thusly indefinite), and Ex parte Kristensen, 10 USPQ2d at 1702-04 (same); 35 USC 112(d)/4th par.
Claim 11’s phrase “particles of a moving packed bed of particles flowing through the reactor” (emphases provided) appears to be a contradiction in terms, as it is unclear how a packed bed (or parts/particles thereof) can flow through a reactor or otherwise; a packed bed can at best move if attached to a moving or revolving armature, but can no way flow. The foregoing internal contradiction/inconsistency creates confusion as to the claimed scope and how to avoid infringement thereof (MPEP 2173.02), rendering claim 11 further indefinite and rejected as such under 35 U.S.C. 112(b)/2nd par. See Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1366-67 (Fed. Cir. 2016) (stating that an internally contradictive/inconsistent claim is indefinite and thus properly rejected as such under 35 U.S.C. 112(b)/2nd par.), and Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1362 (Fed. Cir. 2016) (citing Columbia v. Symantec). While the term “packed” has been treated as a nullity (i.e. as if deleted) for examination vis-à-vis prior art, this rejection nevertheless needs addressing.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 11-15 and 17-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Edwin et al., US 2007/0154382 (published 7/5/07) (“Edwin”). Regarding claims 11 (interpreted as detailed above) and 19, Edwin discloses a method comprising receiving a preheated gaseous product comprising CH4 and H2 (obtained from a reactor, such as Edwin’s reactor outlet 4, as free H2 is not naturally present in appreciable amounts; MPEP 2112) 3 in a medium T section2 (here, the lowest 1/3rd of reactor region 7, i.e. region 31 in Fig. 3), heating gases and/or particles to a 1st T via the preheated gaseous product, further heating (superheating) the gases and/or particles to a 2nd T in a superheating section (i.e. in the middle 1/3rd of reactor region 7, i.e. region 32 in Fig. 3), heating different particles within a high T section (i.e. in the top 1/3rd of reactor region 7, i.e. region 33 in Fig. 3) to a decomposition and/or reaction T with the superheating section-heated gases and/or particles to raise the T of the different particles to a decomposition and/or reaction T, receiving the so-heated different particles in a decomposition/reaction section of the reactor (which can either be the same as the high T section, or at least the upper portion thereof) and heat-exchanging therein between the so-heated different particles and a feed gas such that the gaseous product (comprising H2) and a solid product (here, carbon nano-fibers, “CNFs”) are formed. See Edwin at, e.g., par. 58, 63, 66, 92-94, 99, 106-11, 113-4, and 117-21; Figs. 1-3.
Regarding claim 12, CNF-coated catalyst particles are removed from the overall reactor and are treated to remove the CNF from the catalyst particles. See id. at, e.g., par. 65.
Regarding claim 13, CNF-coated catalyst particles are separated, in/via gas-permeable barrier 2, from the gaseous product formed in the decomposition/reaction section of the reactor. See id. at, e.g., par. 103, 112; Figs. 1-3.
Regarding claim 14, on contacting each other as detailed above vis-à-vis claim 11, the preheated gaseous product heat exchanges with the particles in the medium T section, i.e. before said particles flow into the high T section. MPEP 2112.
Regarding claim 15, the further heating (superheating) section 32 employs an electrical heating system 21. See Edwin at, e.g., par. 61, 113-4; Fig. 2.
Regarding claims 17-18, Edwin’s various sections employ T ≥ 650oC. See id. at, e.g., par. 109.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
In considering the obviousness rejections below, the applicant should note that the person having ordinary skill in the art at the time of the effective filing date of the claimed invention has the capability of understanding the scientific and engineering principles applicable to the claimed invention. The references of record in the application reasonably reflect this level of skill.
Claim 18 is rejected under AIA 35 U.S.C. 103 as being unpatentable over Edwin. Additionally and/or alternatively regarding claim 18, Edwin’s teachings are as above. Should it be argued that Edwin’s T ≥ 650oC does not disclose the claimed range with sufficient specificity to anticipate (Examiner does not agree with such an argument; this additional and/or alternative ground of rejection is provided for completeness of the record), Edwin’s T ≥ 650oC range would nevertheless render the claimed range prima facie obvious: it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to ascertain and employ a desired 2nd T, such as within the claimed range, via routine experimentation- it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See MPEP 2144.05, citing In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Claims 16 and 18 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Edwin in view of HU217032B (1999) (incl. English machine transl’n, “EMT”) (“’032”). Regarding claim 16, Edwin’s teachings are as detailed above. While Edwin’s electrical heating system is not a plasma system as claimed, ‘032 so teaches.
‘032 teaches, in an overall method of decomposing CH4 to C and H2 (as Edwin does as detailed above), conducting such a decomposing with a plasma arc/torch, stating that doing so desirably gives a carbon product that is uncontaminated with other elements. See ‘032 at, e.g., EMT boxed areas; Fig. 1. Given the foregoing, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Edwin’s overall methodology by employing a plasma arc/torch as/within its electrical heating system as taught by ‘032, to achieve ‘032’s taught advantage of giving a high-/ultra-pure carbon product. MPEP 2143 I.(G). Additionally and/or alternatively, ‘032’s plasma arc/torch is considered to be an equally-effective heater to Edwin’s electrical heating system. As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Edwin’s overall methodology by employing, instead of its electrical heating system, a plasma arc/torch as taught by ‘032- selecting between two or more materials or processes is an obvious choice if their equivalence for the given purpose was known in the art when the invention was made. See MPEP 2144.06 II. Further, "[a]n express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious." Id., citing In re Fout, 675 F.2d 297 (CCPA 1982).
Regarding claim 18, ‘032’s plasma arc/torch achieves a T of 3,000-8,000oC. See ‘032 at, e.g., EMT boxed areas; MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL BERNS whose telephone number is (469)295-9161. The examiner can normally be reached M-F 8:30-5:00 (Central). Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at (571) 270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANIEL BERNS/ October 8, 2026
Primary Examiner
Art Unit 1736
1 Nomenclature differences, without more, do not give rise to non-obviousness. See Ex parte Stanley, 121 USPQ 621, 625 (BPAI 1958) (holding that mere nomenclature differences do not patentably distinguish a claim from the prior art), and Sellers v. Cofrode 35 F. 131 (C.C.E.D. Pa. 1888) (per curiam) (stating that a difference in naming “does not tend to distinguish”). See also In re Skoner, 517 F.2d 947, 950 (CCPA 1975) (reaching conclusion so as to prevent “the allowance of claims drawn to unpatentable subject matter merely through the employment of descriptive language not chosen by the prior art”).
2 Save for in claims 17-18, as no specific T ranges are defined for the various “medium”, “superheating”, and “high” T sections of claim 11’s reactor, these labels are regarded as being of mere convenience and not limiting the respective sections. Any nomenclature differences between the claims and prior art, without more, cannot serve as a patentable distinction. See fn. 1, above.
